DISH Network LLC v. Fun Dish Inc.

Filing 504

Opinion and Order. Defendants' Motion for Summary Judgment, or in the Alternative, Partial Summary Judgment (Related doc # 337 ) is granted in part and denied in part. Judge Christopher A. Boyko on 6/12/2015. (H,CM)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
EASTERN DIVISION

DISH NETWORK, LLC.,
Plaintiff,
Vs.
FUN DISH, INC.,ET AL.,
Defendant.

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CASE NO.1:08CV1540
JUDGE CHRISTOPHER A. BOYKO

OPINION AND ORDER

CHRISTOPHER A. BOYKO, J:
This matter is before the Court on Defendants’ Motion for Summary Judgment, or in the
Alternative, Partial Summary Judgment (ECF # 337). For the following reasons, the Court
grants, in part, and denies, in part, Defendants’ Motion.
Plaintiff’s Third Amended Complaint alleges a number of claims against Defendants Fun
Dish, Inc. (an Ohio corporation that acquires and manages toll free numbers for other companies
and acts as a pass through for credit card charges for Fun Dish of Florida, Inc.), Fun Dish of
Florida, Inc. (a Florida corp. with its principal place of business in Florida and current owner of
the rights to allegedly infringing phone numbers at issue in this suit), and Dish 1 Up Satellite,
Inc., an Ohio corporation with its principal place of business in Ohio and a DirecTV retailer.
DirecTV is a direct competitor of Dish Network in the Direct Broadcast Satellite business.
According to Plaintiff’s Third Amended Complaint, Plaintiff’s primary customer service

number is 1-800-333-DISH (3474). Defendants use the numbers 1-888-333- 3474 and 1-866333-3474 along with several additional numbers containing the alphanumeric DISH embodied in
the last four digits 3474. The heart of Plaintiff’s Complaint is that Defendants are using these
confusingly similar numbers to ensnare Plaintiff’s customers, attempting to reach Plaintiff via its
customer service number but misdial and reach Defendants. Defendants then siphon off
Plaintiff’s customers using misrepresentations and sign them up for DirecTV. Plaintiff’s Third
Amended Complaint alleges Unfair Competition under the Lanham Act against Dish 1 Up, Inc.
and Fun Dish, Inc.; Deceptive Trade Practices in violation of Ohio’s Deceptive Trade Practices
Act against Dish 1 Up, Inc., and Fun Dish, Inc.; Common Law Unfair Competition against Dish
1 Up, Inc. and Fun Dish, Inc.; Two Counts of Common Law Trademark Infringement and Trade
Name Infringement against Dish 1 Up, Inc. and Fun Dish, Inc.; Trademark Infringement under
the Lanham Act against Dish 1 Up, Inc., and Fun Dish, Inc.; Trademark Infringement under the
Lanham Act against Dish 1 Up, Inc., and Fun Dish of Florida, Inc.; and Common Law
Infringement against Dish 1 Up, Inc., and Fun Dish of Florida, Inc.
Defendants’ First Amended Counterclaim seeks Cancellation of Trademark Registration
No. 3,440, 594 (“DISH”) Pursuant to 15 U.S.C. §§ 1064 and 1119 (Count I); Declaratory
Judgment- Invalidity of Mark Under the Lanham Act (Count II); Cancellation of Trademark No.
3,264,300 (“DISH NETWORK”) Under 15 U.S.C. §§ 1064 and 1119 (Count III); Cancellation
of Trademark Registration (“DISH ON DEMAND”) (Count IV); Refusal of Trademark
Application (“DISH DIGITAL SIGNS”) (Count V); Refusal of Trademark Application
(DISHMARKETINGSOLUTIONS”) (Count VI); Refusal of Trademark Application
(“MOBILEDISH”) (Count VII); Sherman Act violation (Count VIII); Common Law Unfair

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Competition (Count IX); Common Law Tortious Interference with Prospective Business
Advantage (Count X); and Trademark Infringement Lanham Act (Count XI). In a prior ruling,
the Court dismissed Defendants’ Sherman Act and Tortious Interference claims.
Defendants’ Motion for Summary Judgment
Defendants’ Motion for Summary Judgment seeks a determination by the Court that
Plaintiffs’ “DISH” trademark is generic or merely descriptive and lacking in secondary meaning.
Defendants argue that such a finding by the Court would entitle them to summary judgment on
all Plaintiff’s claims and Defendants’ First Amended Counterclaim. Defendants’ further argue
their use of telephone numbers, which include 3474, does not constitute trademark infringement
or unfair competition, entitling them to summary judgment. Lastly, Defendants contend that by
waiting four years to bring this action against Defendants after first learning of the alleged
infringement, Defendants are entitled to summary judgment due to their affirmative defenses of
laches and acquiescence.
Defendants’ primary argument on summary judgment is Plaintiff’s trademark of the term
“DISH” is too generic and, therefore, neither valid nor protectable. Defendants argue that
Plaintiff obtained the trademark in 2008 after having been denied repeatedly by the United States
Patent and Trademark Office. It was only after Plaintiff introduced a survey, purporting to show
that the public did not regard “Dish” to be a generic term, that the PTO granted the trademark.
However, Defendants contend the survey’s author represented that the survey was not intended
to show the genericness of the term “Dish” and further represented that Plaintiff is misusing the
survey.
Defendants further argue they began using the contested numbers years before Plaintiff

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obtained the trademark, therefore, they cannot be liable for infringement. Also, Defendants
argue that the use of frequently misdialed numbers, containing numbers that correspond
alphanumerically to Plaintiff’s trademark, does not violate the Lanham Act under Sixth Circuit
precedent. Lastly, concerning Plaintiff’s trademark infringement claims, Defendants argue
Plaintiff unreasonably delayed bringing an action for years after learning of Defendants use of
similar numbers, therefore, the doctrines of laches and acquiescence defeat Plaintiff’s claim.
Defendants claim Plaintiff knew that Defendants desired to purchase the numbers in 2003 and
knew Defendants were using the numbers in 2004, yet waited until 2008 to bring suit.
Defendants also argue that Plaintiff disclaimed the term “DISH” in order to obtain a
trademark for “Dish Network” as recently as 2007. In 2005, Plaintiff applied for a trademark of
the term “DISH,” which was repeatedly denied by the USPTO as too generic until Plaintiff
introduced the survey which, as stated above, is flawed. Plaintiff allegedly began using the term
“DISH”as a trademark back in 1996, but Defendants argue Plaintiff has failed to produce any
such evidence. In fact, Defendants argue, Plaintiff has produced no evidence of its use of the
“DISH” trademark before Defendants began using the numbers in 2004.
Defendants also point out that in 2003, Dish 1 Up learned the 888 number in question
was inactive and contacted Plaintiff to discuss purchase of the number. Plaintiff informed Dish 1
Up that Plaintiff did not own the rights to the number and thereafter, Dish 1 Up leased the
number. Then, in 2004, Dish 1 Up contacted Plaintiff to determine if Plaintiff wanted to buy the
number from Defendant. Plaintiff indicated it was not interested in acquiring the number and
that Dish 1 Up was free to have it.
Defendants do not dispute that they acquired the numbers specifically to answer misdials

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to existing subscribers of Plaintiff attempting to reach Plaintiff’s customer support number.
However, the evidence will show Defendants did not manipulate customers or misrepresent who
they were. Instead, Defendants attempted to take Plaintiff’s own dissatisfied customers.
Furthermore, Defendants contend they had strong policies in place to prevent any
misrepresentations by employees, including scripts expressly identifying Defendants as a
DirecTV retailer. Also, Defendants contend they do not advertise the allegedly infringing
numbers.
Plaintiff contends its claims I, II, III and IV are not dependent upon Plaintiff’s trademark
telephone number but instead rely on a number of unlawful practices of Defendants including
misrepresentations made by Defendants’ agents to Plaintiff’s customers. Therefore, regardless
of whether Plaintiff’s 1 800 333-DISH trademark is enforceable, Defendants are not entitled to
summary judgment as a matter of law on these claims.
Furthermore, Plaintiff argues that Counts V and VI of Plaintiff’s Third Amended
Complaint are also not dependent on the validity of Plaintiff’s DISH mark. Instead, these claims
depend on Defendants’ use of the DISH NETWORK trade name and stylized mark on their
website. Since the stylized mark is not the subject of a cancellation claim by Defendants,
Defendants are not entitled to summary judgment on Counts V and VI.
In addition, Plaintiff contends its Trademark Infringement claims at Counts VII and VIII
of its Third Amended Complaint are not limited to the use of 1 800 333 3474 but include
infringement claims on a number of other trademarks not subject to Defendants’ validity
challenges.
Plaintiff also opposes Defendants’ argument that its DISH mark is invalid, citing its

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presumption of validity under the law, its evidence of the marks distinctiveness and
nongenericness and its attaining secondary meaning before Defendants’ use of the similar phone
numbers.
Lastly, Plaintiff disputes that it unduly delayed bringing suit as its claims fall within the
applicable statute of limitations, Dish 1 Up was an authorized retailer for Plaintiff until 2007 and
any undue delay was caused by Defendant Fun Dish’s own failure to identify their association
with Dish 1 Up until 2008.
LAW AND ANALYSIS
Standard of Review
A summary judgment shall be granted only if “the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter of law.” See
Fed. R. Civ. P. 56(a). The burden is on the moving party to conclusively show no genuine issue
of material fact exists, Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Lansing Dairy. Inc. v.
Espy, 39 F. 3d 1339, 1347 (6th Cir. 1994). The moving party must do so by either pointing to
"particular parts of materials in the record, including depositions, documents, electronically
stored information, affidavits or declarations, stipulations, admissions, interrogatory answers, or
other materials” or by “showing that the materials cited ( by the adverse party ) do not establish
the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible
evidence to support the fact.” See Fed. R. Civ. P. 56(c)(1)(A), (B). A court considering a
motion for summary judgment must view the facts and all inferences in the light most favorable
to the nonmoving party, Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587
(1986). Once the movant presents evidence to meet its burden, the nonmoving party may not

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rest on its pleadings, but must come forward with some significant probative evidence to support
its claim. Celotex, 477 U.S. at 324; Lansing Dairy, 39 F. 3d at 1347.
This Court does not have the responsibility to search the record sua sponte for genuine
issues of material fact. Betkerur v. Aultman Hospital Ass 'n., 78 F. 3d 1079, 1087 (6th Cir.
1996); Guarino v. Brookfield Township Trustees, 980 F. 2d 399, 404-06 (6th Cir. 1992). The
burden falls upon the nonmoving party to “designate specific facts or evidence in dispute,” Bias
v. Advantage, 905 F.2d 1558, 1563 ( C.A.D.C., 1990); Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 249-50 (1986); and if the nonmoving party fails to make the necessary showing on an
element upon which it has the burden of proof, the moving party is entitled to summary
judgment. Celotex, 477 U.S. at 323. Whether summary judgment is appropriate depends upon
“whether the evidence presents a sufficient disagreement to require submission to a jury or
whether it is so one-sided that one party must prevail as a matter of law.” Amway Distributors
Benefits Ass 'n v. Northfield Ins. Co., 323 F. 3d 386, 390 (6th Cir. 2003) (quoting Anderson, 477
U.S. at 251-52).
Use of Similar Telephone Numbers Containing numbers similar to those in an
Alphanumeric Trademark is not Infringement Under Applicable Federal and State Law
Defendants contend that applicable Sixth Circuit law holds that a competitor’s use of
phone numbers similar to a registered trademark holder’s vanity number does not constitute
trademark infringement. Defendant’s cite to the Sixth Circuit case of Holiday Inns, Inc., v. 800
Reservation, Inc., 86 F.3d 619 (6th Cir. 1996). In Holiday Inns, plaintiff hotel chain brought
trademark infringement and unfair competition claims under the Lanham Act against a defendant
reservation service that used a 1-800 number frequently misdialed by the hotel chain’s

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customers. Plaintiff Holiday Inns owned a trademark to the vanity number 1-800-HOLIDAY.
Defendants included Call Management Systems, Inc., a consulting firm that obtained and
serviced 1-800 numbers for businesses and 800 Reservations, Inc., a reservation agency that
makes hotel reservations for customers from a number of hotel chains, which included Holiday
Inns. 1-800-HOLIDAY translates numerically to 1-800-465-4329. Defendant Call
Management decided to acquire 1-800-405-4329 relying on customers mistaking the letter “O”
in HOLIDAY for the number zero. Holiday Inns filed suit against defendants and moved to
enjoin defendants from using the similar number. The district court granted the injunction
prohibiting defendants from activating or operating the 405 number along with other monetary
relief.
On appeal the Sixth Circuit reversed the district court’s ruling. The court was persuaded
by the fact that defendants minimally advertised or promoted their number. The court further
determined that a party’s ownership of a trademarked vanity number does not permit it to claim
rights to numbers similar to but not identical to the vanity number. The Court further determined
that there was no Lanham Act violation under Sections 32 or 43(a) for trademark infringement
when an alleged infringer never uses the trademarked vanity number but only uses a similar
phone number not containing the trademarked name.
Finally, the Sixth Circuit determined that the acquisition of a number similar to a
trademarked vanity number does not infringe because it does not cause the confusion but instead
merely takes advantage of confusion that already exists amongst the misdialing public. Without
a use of Plaintiff’s mark or deceptively similar copy of a mark Defendants cannot be liable for
trademark infringement for using a telephone number similar to the trademarked vanity number.

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Plaintiff argues that the Sixth Circuit has narrowed the Holiday Inns holding in a
subsequent case, Taubman Co. v. Webfeats, 319 F.3d 770, (6th Cir. 2003). In Taubman, the
Sixth Circuit determined there was no infringement by a website domain name registrant who
obtained and registered several domain names that contained plaintiff’s trademarks for
“Taubman” and “The Shops at Willow Bend.” The Sixth Circuit reversed the lower court’s
grant of injunctions against defendant. The Sixth Circuit determined that defendant’s ownership
of the domain names was not for use in advertising and did not cause a likelihood of confusion.
According to Plaintiff, the Taubman decision relied heavily on the fact that defendant had
a disclaimer on his site clearly indicating he was not affiliated with the trademark owner. No
such disclaimer is offered by Defendants in this case.
While the Taubman case does state that the Holiday Inns decision was based partly on
the fact that defendants disclaimed affiliation with plaintiff via a recorded message, this issue
was not dispositive. As the Court reads Holiday Inns, the Sixth Circuit relied primarily on the
fact that defendant did not use Plaintiff’s mark but instead used a number similar to the
trademarked vanity number. The Court further relied on the fact that defendant did not advertise
the similar numbers, thus, they did not use plaintiff’s trademark.

Taubman clearly

acknowledges this holding and unequivocally states that such a finding is fatal to a trademark
infringement claim based on similar phone numbers. (“In Holiday Inns, the defendant did not
actually use the plaintiff's trademark, “Holiday,” but used the most common “misspelling” of it.
Accordingly, we also found no infringement in Holiday Inns because there was no “use” of the
plaintiff's mark.”) Taubman Co., 319 F.3d at 777.
Here, the undisputed evidence demonstrates Defendants did not advertise the numbers at

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issue. In her declaration attached at (ECF # 338-2 para 6) Alisha Pickering, Director of
Financing and Development for Dish 1 Up, attests that “None of the Defendants have ever
advertised the Numbers.” Plaintiff does not point the Court any evidence contradicting this
assertion by Defendants.
Section 32 of the Lanham Act, 15 U.S.C. § 1114, states in pertinent part:
(1) Any person who shall, without the consent of the registrant-(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation
of a registered mark in connection with the sale, offering for sale, distribution,
or advertising of any goods or services on or in connection with which such use
is likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply
such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be used in
commerce upon or in connection with the sale, offering for sale, distribution, or
advertising of goods or services on or in connection with which such use is likely
to cause confusion, or to cause mistake, or to deceive,
shall be liable in a civil action by the registrant for the remedies hereinafter
provided. Under subsection (b) hereof, the registrant shall not be entitled to
recover profits or damages unless the acts have been committed with knowledge
that such imitation is intended to be used to cause confusion, or to cause mistake,
or to deceive.

Section 43(a) of the Lanham Act, 15 U.S.C.A. § 1125 reads:
(a) Civil action
(1) Any person who, on or in connection with any goods or services, or any
container for goods, uses in commerce any word, term, name, symbol, or device,
or any combination thereof, or any false designation of origin, false or misleading
description of fact, or false or misleading representation of fact, which-(A) is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person, or as to
the origin, sponsorship, or approval of his or her goods, services, or commercial
activities by another person, or
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(B) in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another person's
goods, services, or commercial
activities...
“In order to avoid summary judgment in a Lanham Act case alleging violations of § 32
(15 U.S.C. § 1114), and § 43 ( 15 U.S.C. § 1125), the nonmoving party must establish that
genuine factual disputes exist concerning those factors that are material to whether confusion is
likely in the marketplace as a result of the alleged infringement.” Holiday Inns, Inc., 86 F.3d at
622 -623. A Lanham Act trademark infringement violation under Section 32 requires “use in
commerce” of a “reproduction, counterfeit, copy, or colorable imitation of a registered mark.”
Setion 43(a) requires use of a word, term, name, symbol, or device... which is likely to cause
confusion.”
Here, Defendants did not use the word “DISH” in connection with the use of their similar
numbers, but instead merely own numbers similar to Plaintiff’s registered trademark in 1-800333-DISH. A fair reading of Holiday Inns supports the Court’s conclusion that mere ownership
of similar numbers, without advertisement and without use of Plaintiff’s “DISH” trademark in
advertising Defendants’ similar numbers, does not constitute a Lanham Act violation under
either Section 32 or 43(a). As Holiday Inns clearly held, such ownership of similar numbers by
a defendant does not cause confusion because the confusion already exists. “The defendants in
this case never used Holiday Inns's trademark nor any facsimile of Holiday Inns's marks.
Moreover, the defendants did not create any confusion; the confusion already existed among the
misdialing public.” Id. at 625. Therefore, because the facts of this case mirror those in Holiday
Inns, the Court grants summary judgment for Defendants on Count VII of Plaintiff’s Third

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Amended Complaint.
Because trademark infringement claims under the Lanham Act apply the same analysis to
Ohio Common Law infringement claims, Defendants are entitled to summary judgment on
Count VIII of Plaintiff’s Third Amended Complaint for trademark infringement under Ohio
common law. “Because trademark claims under Ohio law follow the same analysis as those
under the Lanham Act, our discussion of the federal trademark claims will therefore encompass
the state trademark claims as well”). Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters,
Inc., 280 F.3d 619, 626 n. 2 (6th Cir.2002).
Plaintiff argues its claim in Count VIII encompasses more than Defendants’ infringement
of the “DISH” trademarked vanity number. However, Count VIII of Plaintiff’s Third Amended
Complaint depends upon the acquisition and use of the similar phone numbers. Count VIII of
Plaintiff’s Third Amended Complaint alleges:
66. Dish 1 Up and Fun Dish of Florida are unfairly trading on and appropriating the
reputation and good will of DISH Network’s trademarks for their own commercial gain
by their acquisition and use of the vanity number 333-DISH (3474).
67. Upon information and belief, Dish 1 Up and Fun Dish of Florida’s adoption and
use of colorable imitations of DISH Networks trademarks was and is deliberate,
intentional, knowing and willful and done with the intent to confuse, mislead, or deceive
the public, thereby causing Defendant to profit to an extent which it would not otherwise
enjoy.
68. By reason of the acts of Dish 1 Up and Fun Dish of Florida alleged herein, DISH
Network has suffered, is suffering and will continue to suffer irreparable damage and,
unless Dish 1 Up and Fun Dish of Florida are restrained from continuing these wrongful
acts, the damage to DISH Network will increase.

69. By their acts alleged herein, Defendants have engaged in trademark infringement
and trade name infringement under the common law of the State of Ohio.
Plaintiff’s Third Amended Complaint contains no factual allegations that Defendants
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infringed other trademarks of Plaintiff apart from the allegations that Defendants used Dish
Network trademarks on its website and infringed Plaintiff’s trademarked vanity number.
Plaintiffs Third Amended Complaint at Count VI already states a claim for common law
infringement under Ohio law based on Defendants’ use of Plaintiff’s trademarks on its website.
Count VIII is clearly limited to Defendants alleged infringement of the vanity number.
Therefore, for the reasons stated above, finding no Lanham Act trademark infringement
for use of similar phone numbers, Defendants are entitled to summary judgment on Plaintiff’s
Ohio common law trademark infringement claim at Count VIII.
Cancellation of Plaintiff’s Trademark “DISH” as Generic and Lacking Secondary
Meaning
Defendants move for summary judgment on all Plaintiff’s claims and on Count I of
Defendants First Amended Counterclaim because Plaintiff’s federally registered trademark for
“DISH” is too generic or merely descriptive to entitle it to trademark protection. Section 32 of
the Lanham Act imposes liability on parties infringing on a federally registered trademark and
reads in pertinent part:
(1) Any person who shall, without the consent of the registrant-(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of
a registered mark in connection with the sale, offering for sale, distribution, or
advertising of any goods or services on or in connection with which such use is
likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply
such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be used in
commerce upon or in connection with the sale, offering for sale, distribution, or
advertising of goods or services on or in connection with which such use is likely
to cause confusion, or to cause mistake, or to deceive,

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shall be liable in a civil action by the registrant for the remedies hereinafter
provided. Under subsection (b) hereof, the registrant shall not be entitled to
recover profits or damages unless the acts have been committed with knowledge
that such imitation is intended to be used to cause confusion, or to cause mistake,
or to deceive.

The United States Supreme Court has described trademark classifications as follows:
“[m]arks are often classified in categories of generally increasing distinctiveness; following the
classic formulation set out by Judge Friendly, they may be (1) generic; (2) descriptive; (3)
suggestive; (4) arbitrary; or (5) fanciful.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763,
768 (1992). “The latter three categories are considered inherently distinctive and are entitled to
protection. By comparison, generic marks are not registrable. Descriptive marks are not
inherently distinctive but may be registered if they have acquired a “secondary meaning” in
commerce.” G.M.L., Inc. v. Mayhew 188 F.Supp.2d 891, 895 -896 (M.D.Tenn.,2002) citing Two
Pesos, 505 at 763–64. A trademark acquires secondary meaning when “it can be determined that
the attitude of the consuming public toward the mark denotes a single thing coming from a single
source.” Burke–Parsons–Bowlby Corp. v. Appalachian Log Homes, Inc., 871 F.2d 590, 596 (6th
Cir.1989). In other words, a mark acquires secondary meaning when it “becom[e] distinctive of
the applicant's goods.” Champions Golf Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d
1111, 1117 (6th Cir.1996).
“A generic term is the weakest type of mark; it is a term used to commonly describe the
relevant type of goods or services, and ‘cannot become a trademark under any circumstances.’”
Champions Golf Club, Inc. v. The Champions Golf Club, Inc. 78 F.3d 1111, 1117 (6th Cir. 1996)
quoting Induct–O–Matic Corp. v. Inductotherm Corp., 747 F.2d 358, 362 (6th Cir.1984).
“ A merely descriptive term specifically describes a characteristic or ingredient of an article. ”
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Id. A descriptive mark “is entitled to protection only upon a showing of secondary meaning,”
Champions Golf, 78 F.3d at 1117 by “becoming distinctive of the applicant's goods.”
Induct–O–Matic, 747 F.2d at 362.
“To acquire a secondary meaning in the minds of the buying public, an article of
merchandise when shown to a prospective customer must prompt the affirmation, ‘That is the
article I want because I know its source,’ and not the negative inquiry as to “‘Who makes that
article?’ In other words, the article must proclaim its identification with its source, and not
simply stimulate inquiry about it.” Champions Golf, 78 F.3d at 1117 quoting S.P.A. Esercizio v.
Roberts, 944 F.2d 1235, 1239 (6th Cir.1991).
“Whether a mark is generic is a question of fact.” T. Marzetti Co. v. Roskam Baking Co.
680 F.3d 629, 633 (6th Cir.,2012). When a party challenges the genericness of a federally
registered trademark the “federal registration constitutes a presumption that the feature is not
generic and the challenger bears the burden of overcoming this presumption.” Maker's Mark
Distillery, Inc. v. Diageo North America, Inc., 703 F.Supp.2d 671, 687 (W.D. Ky.,2010.) citing
Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504, 513 (6th Cir.2007). “Telephone
numbers may be protected as service marks, and telephone numbers that correlate with marks
may be entitled to protection.” Future Lawn, Inc. v. Maumee Bay Landscape Contractors,
L.L.C. 542 F.Supp.2d 769, 775 (N.D.Ohio,2008).
Here, Defendants contend Plaintiff’s “DISH” trademark is generic because “almost every
dictionary includes “satellite dish” as one definition for the word “dish.” (ECF # 337-1, pg 22).
Defendants further offer evidence from Plaintiff’s own admissions that other satellite retailers in
Cleveland and Chicago used the term “dish” in their name. According to Defendants, such

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extensive third party use weakens Plaintiff’s mark and Plaintiff has not produced evidence of any
enforcement actions against these other retailers.
Defendants also argue that Plaintiff’s disclaimer of the term “DISH” when applying for
other trademarks warrants cancellation. However, 15 U.S.C. §1056(b) allows for a disclaimed
term to be later trademarked if it becomes distinctive.
Defendants further argue that if Plaintiff’s mark were deemed descriptive rather than
generic, it would still be entitled to summary judgment on Count I of its Amended Counterclaim
for Cancellation because Plaintiff’s “DISH” trademark did not acquire secondary meaning before
Defendants began using the competing numbers.
Plaintiff’s rely on the presumption of validity inherent in any federally registered
trademark. Plaintiff further cites the Court to the surveys of experts Berger, Johnson and Stec
for Plaintiff’s assertion that all support the distinctiveness of Plaintiff’s mark. Defendants
dispute Plaintiff’s interpretation and conclusions derived from these surveys. The parties dispute
Berger’s survey, offered in support of Plaintiff’s trademark prosecution before the United States
Patent and Trademark Office. Berger has since offered conflicting testimony on the scope and
purpose of his original survey. Furthermore, the Court struck Stec’s rebuttal report.
These disputes concerning the value of and conclusion drawn from competing expert
testimony present genuine issues of fact for a jury to decide. The conclusions concerning the
relevant surveys involve witness credibility determinations and factual conclusions reserved for
the trier of fact, as it is within the jury’s purview to assign weight and value to the competing
expert opinion on survey evidence. Therefore, the Court finds that Defendants have not offered
sufficient uncontested evidence of genericness to overcome the presumption of validity and the

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Court denies Defendants’ Motion for Summary Judgment on Count I of Defendants’ Amended
Counterclaim and denies summary judgment on the claims Plaintiff’s Third Amended Complaint
based on Defendants’ Cancellation claim and defense.
Court has Already Determined Defendants Made Material Misrepresentations Concerning
Their Affiliation with Plaintiff
In its Opinion and Order on Plaintiff’s Motion for Partial Summary Judgment, the Court
held that Plaintiff had demonstrated that Defendants made material misrepresentations
concerning their affiliation with Plaintiff to consumers. The Court further determined that
Defendants continued to use Plaintiff’s stylized DISH NETWORK mark on Defendants’ website
after Defendants retailer agreement had been cancelled, warranting summary judgment on
liability for Plaintiff on Counts V and VI of its Third Amended Complaint. Because Counts I-IV
of Plaintiff’s Third Amended Complaint depend, not on the validity and enforceability of
Plaintiff’s DISH mark, but upon the misrepresentations of Defendants agents and employees to
consumers who misdialed, Defendants are not entitled to summary judgment on Counts I - IV of
Plaintiff’s Third Amended Complaint. The Court further denies summary judgment for
Defendants on Counts V-VI of Plaintiff’s Third Amended Complaint for the reasons stated in the
aforementioned Opinion and Order.
The Court further finds Defendants’ Laches and Acquiescence arguments are
inapplicable to the majority of the claims in Plaintiff’s Third Amended Complaint, considering
that Counts I-VI are not dependent upon Plaintiff’s DISH trademark and the Court has granted
summary judgment for Defendants on Count VII and VIII of Plaintiff’s Third Amended Claim
on other grounds.

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Therefore, for the foregoing reasons, the Court grants summary judgment for Defendants
on Counts VII and VIII of Plaintiff’s Third Amended Complaint and denies summary judgment
for Defendants on Counts I-VI of Plaintiff’s Third Amended Complaint and Count I of
Defendants’ First Amended Counterclaim.
IT IS SO ORDERED.

s/ Christopher A. Boyko
CHRISTOPHER A. BOYKO
United States District Judge
Dated: June 12, 2015

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